Time and Expense Consequences for Sitting Out Sunrise and Landrush Periods

Sunrise refers to a stipulated period during which trademark owners may defensively preregister domain names in new generic top-level domains (gTLDs) prior to the registrar accepting registrations from the general public. This initial period is followed by the connotatively rich “Landrush” in which anyone (for a premium) can register domain names on a first-come-first served basis even if the registrations are ultimately ruled infringing. Landrush is followed by “General Availability.”

Traditionally, there have been no gatekeepers at registration but ICANN’s Trademark Clearinghouse (TMCH) has introduced an early warning notice service that prompts trademark owners to commence suspension or forfeiture proceedings against infringing domain names either under the newly implemented Uniform Rapid Suspension Sysem (URS) or the Uniform Domain Name Dispute Resolution Policy (UDRP). The TMCH “allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new gTLDs.”

Whether to sit out Sunrise has become more prominent with ICANN’s approval of numerous new generic top level domains (gTLDs). There are a number of Sunrises and Landrushes currently under way. Some of the registrations have already been challenged in both URS and UDRP proceedings. I have been dealing with .nyc which is presently in Sunrise until June 20. Dot nyc is unusual in certain respects since it is limited to companies having a physical presence in New York City. However, the threshold question is the same for all gTLDs, namely what are the consequences of not taking advantage of the Sunrise period? And, does failure mean that the trademark owner is stuck with a doppelganger?

The quick answer is that trademark owners do not have to take advantage of the Sunrise period but sitting out makes them vulnerable to opportunistic registrations after Sunset. Similarly, trademark owner do not have to register their trademarks with the TMCH. However, even if an owner elects to sit out Sunrise it may still be prudent to register trademarks because of the benefits which have already become apparent from the dozen or so URS proceedings that have already been adjudicated. The consequences for failing to act at all defensively or protectively are necessarily greater for weak trademarks. The evidence for this is all too clear from numerous UDRP decisions.

Precedential decisions in the .mobi and .tel suffixes (which had their Sunrises several years ago) indicate that the consequences for owners of well-known and famous marks of not taking advantage of Sunrise periods is time and expense of prosecuting registrants for abusive registration in post-Sunrise proceedings. See, C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, D2008-1528 (WIPO December 4, 2008) (<bechstein.mobi>; Adidas AG v. Zhifang Wu, D2007-0032 (WIPO March 21, 2007) (<adidas.mobi>); and Mansueto Ventures, LLC v. Jonathan Witte, D2006-1479 (WIPO January 19, 2007) (<inc.mobi>); Omron Corporation v. Yuri A Ivanov, D2011-1071 (WIPO September 2, 2011) (<omron.tel>). The xxx TLD is in a different category because it is not trademark owners who naturally exploit that space. See HEB Grocery Company, L.P. v. Eric Gonzales, FA1112001421851 (Nat. Arb. Forum February 7, 2012) (<heb.xxx>); Richard Branson v. Sean Truman, FA1201001423689 (Nat. Arb. Forum February 14, 2012) (<richardbranson.xxx>), although there have been relatively few xxx disputes.

Respondents have advanced several arguments against forfeiture in these post-Sunrise proceedings. One argument which is upside down on the law is that “Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.” The emphasis is on proof which is definitive. However, under the URS and UDRP (although the standards of proof for each are different) complainant has a relatively light burden that is satisfied by a prima facie showing that respondent lacks rights or legitimate interests. The burden then shifts to respondent to prove that it has rights or legitimate interests in the disputed domain name. Adidas AG (decided under the UDRP) is a case on point. In Respondent’s view he was the aggrieved party: “[C]omplainant should take the responsibility of securing the different domain names incorporating the ADIDAS mark and not attempt to seize them from others like respondent who has legitimately registered the domain name.” The Panel explained that

neither Respondent’s compliance with the ‘.mobi’ sunrise procedures nor Complainant’s failure to apply for [a domain name], in and of itself, confers upon Respondent a right to use Complainant’s mark in that domain name for a business that competes with Complainant’s …. [E]ven success in a Sunrise Challenge does not insulate a ‘.mobi’ domain name from a subsequent attack under the Policy.

Thus, while sitting out Sunrises is no obstacle to complainant exercising its rights under the URS or UDRP–“[it is irrelevant] that “complainant did not avail itself of the ‘sunrise’ procedure for .mobi names,” Mansueto, supra.–it makes good sense not to ignore the time and expense consequences.

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